IN THE UNITED STATES DISTRICT COURTDISTRICT OF UTAH, CENTRAL DIVISION1-800 CONTACTS, INC.,Plaintiff,v.LENS.COM, INC. d/b/a/ LENS.COM,JUSTLENS.COM and JUSTLENSES.COM,Defendant.
MEMORANDUM DECISIONAND ORDER
Case No. 2:07-cv-591 CWJudge Clark Waddoups
INTRODUCTION
The parties in this action sell replacement contact lenses over the Internet. 1-800 Contacts,Inc. (“Plaintiff”) is the owner of certain service marks and contends that Lens.com, Inc.(“Defendant”) has used the service marks in commerce without its consent. Specifically, Plaintiff contends that Defendant and its affiliates bid on the service marks as keywords to generate asponsored link for Defendant on Google and other search engines. Moreover, because Defendant’ssponsored links were generated when a consumer entered “1800Contacts” as the search term, thesponsored links were likely to cause confusion as to source, affiliation, or sponsorship.Plaintiff moves for partial summary judgment on its claims for trademark infringement andsecondary liability. It also moves for summary judgment on Defendant’s defense that its use of Plaintiff’s mark as a keyword is not a “use in commerce.” Finally, it moves for summary judgmenton Defendant’s descriptiveness and fair use defenses. In turn, Defendant moves for summary judgment and seeks dismissal of all claims and causes of action in the Amended Complaint. The
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court grants Plaintiff’s motion on Defendant’s defense that purchase of a keyword is not a use incommerce. The court otherwise denies Plaintiff’s motion for summary judgment. Although purchase of a keyword is a use in commerce, Defendant is nonetheless entitled to summary judgmenton all claims and causes of action in the Amended Complaint for the reasons discussed below.
FACTUAL BACKGROUND
1
General Business Facts
Plaintiff sells replacement contact lenses through various channels, including the Internet.It owns two service marks, which were registered in 2003. One service mark is the word mark “1
2
800CONTACTS” and the other service mark is the following stylized word mark:Because the marks have been in use for more than five years, they are statutorily incontestable.
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Since its inception in 1995, Plaintiff has spent over $220 million in advertising through television,radio, newspapers, the Internet, e-mail, and direct mail. Between 2003 and 2008, Plaintiff spent $11
4
million advertising with Google alone. For at least five years, Plaintiff has retained Synovate to
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The parties filed their memoranda and exhibits under seal. The court has considered the
1
information disclosed in this decision to determine whether it warrants sealing the decision. Thecourt concludes that the disclosed information does rise to the level that preclusion of publicationis necessary.Service Mark, Reg. No. 2,675,866 (Jan. 21, 2003) (Dkt. No. 181, Ex. 2); Service Mark,
2
Reg. No. 2,731,114 (Dkt. No. 181, Ex. 3). For purposes of the court’s analysis, there is nodistinction between a service mark and a trademark.
See
Combined Declaration of Use & Incontestability (Dkt. No. 181, Exs. 4–5).
3
Declaration of Allen Hwang, ¶ 8 (Dkt. No. 181, Ex. 1).
4
Id.
5
-2-
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conduct “awareness” surveys to determine the strength of its service marks. In 2008, Plaintiff’s mark ranked first in consumer awareness among contact lens wearers.
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Defendant also sells replacement contact lenses, and has been in competition with Plaintiff since 1998. It owns the service mark “1-800-GET-LENS.” The service mark was registered on
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May 21, 2002 by another company, but Defendant subsequently acquired the mark. Defendant also
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has previously claimed common trademark rights to “1-800 Lens.com” and recently obtained federalregistration of it. Unlike Plaintiff, Defendant only advertises on the Internet. Between 2003 and
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2008, Defendant spent between $3 million to $4.7 million in Internet advertising. Besides
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marketing and selling contact lenses in similar channels of trade, Plaintiff and “Lens.com sellessentially the same contact lens products and directly compete for customers.”
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Google Search Results
“Google is an Internet company that owns and operates one of the world’s most utilizedinternet search engines.” “A search engine is a computer program that allows web users to search
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Synovate Research Reports (2008) (Dkt. No. 182, Ex. 8, Attach. B).
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1-800-GET-LENS, Reg. No. 2,571,563 (May 21, 2002) (Dkt. No. 179, Ex. 15 at 3).
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Trademark Assignment Abstract of Title (Dkt. No. 200, Ex. 44).
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See
1-800 Lens.com, Reg. No. 3,875,337 (Nov. 16, 2010). Defendant further claims
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common law trademark rights in “Contacts America” and “Just Lenses.”
Compare
Lens.com’s Response to Statement of Background & Material Fact, ¶ 14 (Dkt.
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No. 209, Ex. 36)
with
Declaration of Theodor Tatos, ¶ 35 (Dkt. No. 179, Ex. 3) (hereinafter “TatosDecl.”).Lens.com’s Response to Statement of Background & Material Fact, ¶ 16.
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Rosetta Stone Ltd. v. Google Inc.
, No. 1:09cv736, 2010 U.S. Dist. LEXIS 78098, at *6
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(E.D. Va. Aug. 3, 2010) (citation omitted).-3-
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